Last week a Beaumont jury in Chief Judge Ron Clark's court returned a verdict in favor off the plaintiff in Barry v. Medtronic, which dealt with devices used in scoliosis surgeries. It found all the asserted claims infringed and willfully so, and that none of the defensive issues had been shown by clear and convincing evidence. It awarded a total of $20,346,390.

Meanwhile, across the hall, and around the corner from Judge Crone in the Beaumont courthouse, Magistrate Judge Zack Hawthorn and District Judge Thad Hartfield resolved this civil rights lawsuit against plaintiff's jailers, whom she contended were deliberately indifferent to her serious medical needs.

Judge Hawthorn analyzed the claims made against the jailers in the motion to dismiss, and submitted a report and recommendation that the motion to dismiss be granted. Judge Heartfield reviewed the report and the recommendations and found that the Judge Hawthorn had correctly concluded that the claim against defendant Black in her official capacity was barred by the Eleventh Amendment. With respect to the claim against defendant Black in her individual capacity, he similarly agreed that defendant Black was entitled to qualified immunity because the plaintiff's allegations did not demonstrate that she acted with deliberate indifference to her serious medical needs.

While noting that the plaintiff included additional allegations against defendant Black in her objections, even when those allegations were considered, Judge Heartfield concluded that the plaintiff still failed to show that defendant Black was aware of facts indicating that the plaintiff was subject to substantial risk of serious harm. As a result, the court concluded that the allegations against defendant Black were insufficient to meet the “extremely high standard” applicable to claims based upon deliberate indifference, and thus Defendant Black was therefore entitled to qualified immunity.

This is a civil rights case in which eight plaintiffs allege that they were discriminated against on account of their race while employed at Firestone's chemical manufacturing facility in Orange, Texas. Defendant Firestone sought summary judgment on various grounds.

After reviewing the applicable law and the underlying facts, Judge Crone concluded that Firestone's motions for summary judgment would be granted in part and denied in part. Plaintiff Ruffin's 2009 Title VII and § 1981 discriminatory demotion claims, as well as Plaintiffs' Title VII and § 1981 denial of overtime claims, "survive summary judgment and may proceed to trial." However, with respect to Plaintiffs' other claims, the Court concluded that there remained no material facts in dispute, and Firestone was entitled to judgment as a matter of law.

The plaintiff in this case sought to modify the protective order to allow its litigation counsel to participate in re-examinations and appeals related to the patents in suit and other patents within the same family. Following an oral hearing, Judge Clark granted the motion to modify the protective order, and permitted plaintiffs litigation counsel who had viewed highly confidential source code to be subject to a limited prosecution bar.

Judge Clark noted that the parties did not disagree about the need for protective order, nor certain aspects of the prosecution bar, including the two-year duration in the bar or the actual, original prosecution of patents describing related technology by attorneys who see confidential information. The dispute in this case was as to whether litigation counsel for the plaintiff could participate in re-examinations or other post-grant proceedings, a participation the plaintiff contended was appropriate because those proceedings could only narrow claims. Defendants, on the other hand, countered that the risk still existed of the rewording of claims in light of seeing highly confidential information.

“Of importance to this case,” Judge Clark wrote, “is the [Federal Circuit’s] discussion of the burden of proof [regarding entry of a prosecution bar]. The party seeking a prosecution bar must first show that the information designated to trigger the bar, the scope of activities prohibited by the bar, the duration of the bar, and the subject matter covered by the bar reasonably reflect the risk presented by the disclosure of proprietary competitive information.” (Internal quotation omitted). Judge Clark noted that although he noted this case law at the hearing, “defendants’ response was little more than repetition of ‘source code is our gem’ as though that was a protective mantra.” He noted that there was no evidence presented, not even in camera, to give him the basis to weigh the information, the scope of activities, or the subject matter reflecting the risk, and specifically called out that there was no concern expressed over codefendants attorneys and experts, even where they were in close competition, examining all discovery in the case. Judge Clark similarly noted that the plaintiff had provided little information about whether each of its trial attorneys is, or is not included in competitive decision-making.

Judge Clark noted that he had already entered his standard protective order in this case, and that while the parties had disputes over the provisions of that initial protective order, and he ruled on those disputes, none dealt with the exact wording of the prosecution bar, so he had included form language from the Northern District of California Model Rules, without objection. “A federal court hearing is not a trial run conducted for the issuance of an advisory opinion, after which counsel submit their “real” evidence and make their “strong” arguments,” he cautioned. Nonetheless he reevaluated the relevant provision of the protective order under the applicable Federal Circuit law in light of the presentations made to him.

Judge Clark’s opinion analyzed the issue of “competitive decision-making” and then considered separately the proceedings at the PTO as opposed to the pending Federal Circuit case. Judge Clark considered the risk of even inadvertent disclosure of defendants’ source code in filings or argument before the Federal Circuit very low, balanced against the burden to the plaintiff of selecting new counsel for the appeal. Accordingly, he held that the appellate counsel could continue to represent the plaintiff throughout the appeal before the Federal Circuit, but did order that these counsel could not include in the briefing or record any portion of or description of source code, nor make any such disclosure in oral argument.

With respect to the re-examination and other post-grant proceedings, however, Judge Clark concluded that some measure of protection was necessary, and crafted a limited prosecution bar the permitted some involvement in re-examination without engaging in the sort of competitive decision-making that was a concern to the Federal Circuit. Interestingly, as he had already determined to transfer this case eventually to the Northern District of California, Judge Clark reviewed decisions from that district that address this issue. His final ruling was that the plaintiff designate one or more attorneys on its trial team who will be responsible for coordinating with, and consulting with, counsel handling the re-examinations in order to address plaintiff’s concern that it not inadvertently take inconsistent positions in the various proceedings. Those attorneys could not be involved in reviewing highly confidential source code of any defendant, nor take part in discussing such code with any cocounsel or any witness in the case, nor could they read reports from witnesses in the case concerning such code or attend depositions or read portions of transcripts, etc.. However they could participate in all other aspects of the case, as well as participating in trial. Whether such trial exposure causes them to become subject to the limited bar for attorneys reviewed code would depend on exactly what was revealed at trial and what stage the re-examination was in at that time. The other attorneys and witnesses who view source code could not participate in the proceeding.

This is a patent case in which the defendants moved to transfer venue from the Eastern District of Texas, Beaumont Division, to the Northern District of California. Judge Ron Clark of Beaumont noted that he had previously held Markman hearings on two of the five patents, had tried Affinity's suits on those patents against three other defendants, and has a Markman hearing on those two patents (of the five asserted in this case) scheduled in January for this case. Accordingly, he concluded that judicial economy strongly favored his including whatever claim construction disputes the present defendants might raise on those two patents in that hearing, currently set for January 2014. However, he noted that the other venue factors weighed in favor of transferring the case.
So after consulting with the chief judge of the Northern District of California, Judge Claudia Wilken,
Judge Clark concluded that he would retain jurisdiction over the defendants through the claim construction process in January, and that a conditional transfer of the case would become effective the day the court issues its claim construction opinion.

Within the opinion itself, Judge Clark notes that his conference with Judge Wilkin did not just result in the conclusion that transferring the case after the Markman hearing on the previously construed patents would be the best allocation of judicial resources, but instead extended to affirmatively coordinating the pretrial activities in the two courts to expedite the efficient processing of the case. For example, Judge Wilkin additionally suggested that to avoid the usual delays inherent in a transfer, upon receipt of a copy of Judge Clark's order of conditional transfer, the Northern District of California could then, in accordance with its own procedures and protocol, open a case file and assign a judge. That judge will then have the option of identifying time available to schedule claims construction for the three remaining patents and the trial on all the patents. As Judge Clark noted, this will minimize delay resulting from transfer, concerned that he noted is part of the venue analysis as well as federal Rules of Civil Procedure 1.

Judge Clark also addressed the issue of reconsideration of his Markman ruling before the California judge, writing that "if the parties are not satisfied with this court's Markman analysis, they will likely present to the California court more sharply focused arguments on the limited number of issues, just as they would on appeal." Nor was this speculation on his part. "This court has benefited in the past when a patent it construed was asserted against another defendant in another court. That court adopted all of this court's claim constructions but one, and based on a new argument, arrived at a more accurate construction for that term, which this court was then able to use."

This is not the first time that an Eastern District court has coordinated with the Northern District of California to promote efficiency in resolving a patent case. Back in March I posted on Chief Judge Davis' 50 page opinion in Personalweb Techs, LLC v. NEC, 2013 U.S. Dist. LEXIS 46296 (E.D. Tex., Mar. 21, 2013) in which he determined that transfer of some of the defendants to the ND Cal was proper, and then consulted with Chief Judge Wilken to determine whether the cases should be transferred before or after the upcoming claim construction hearing.

One of the enduring (after 20 years you get to use that word) characteristics of Eastern District judges is their tendency to manage their dockets creatively, coming up with new ways to handle recurring issues, often to minimize cost and delay.

A good example of this is this order issued last week by Judge Ron Clark of Beaumont in a complex case (nonpatent), who came up with some innovative practices, as noted below. The case involves three related cases involving alleged FLSA violations from a number of subcontractors, all working at the same worksite. There are over 900 plaintiffs and nearly 30 defendants in the litigation, and Judge Clark studied ways to reduce the expense of discovery. Here is what he came up with, specifically with regard to consolidation and deposition practice:

Consolidation

Judge Clark noted that he was considering a
consolidation scheme, where all claims against a single Defendant would be combined. "If
any party has an objection to this procedure, it must be filed by October 1, 2013," he ordered. "If no party
objects, it will be deemed unopposed."

Depositions

Next, until such time
as scheduling orders are entered in the severed cases, depositions may proceed in the
following manner.

To reduce costs, counsel for each Defendant does not have to attend the
depositions of past or present employees or officers of other defendants. Mr. Werner shall
notify counsel for Defendants who do not appear when the transcribed deposition is
received from the reporter. See Fed. R. Civ. P. 30(f).

Defense counsel who did not attend will have 21
days to notify all parties of intent to ask additional questions to the witness. All counsel shall
cooperate to arrange a second deposition of the witness at which all counsel wishing to ask additional
questions shall attend.

Such second deposition shall not be used to rehash topics covered in
the first deposition. Questions shall be limited to topics relevant specifically to that attorney’s
client.

The cost of such depositions shall be divided by defense counsel attending in proportion
to the number of pages required for each attorney’s portion of the deposition.

"This procedure is
designed to minimize costs to defendants by alleviating the need for each to attend depositions
likely to be irrelevant to their client but allow an opportunity to question a witness who
unexpectedly provides information relevant to that Defendant’s defense," Judge Clark wrote. "It is not to be used as a method of multiplying
costs to Plaintiffs or to inconvenience witnesses."

Judge Schneider referred the Markman in this case to Judge Giblin, who produced a report and recommendation last week on the defendants' motion for summary judgment of indefiniteness.

Judge Giblin wrote that Defendants' argument essentially boiled down to the contention that the permissive wording of one of the claims rendered it indefinite because a PHOSITA couldn't figure out whether the claim could be satisified by an apparatus that was something, something else, or something completely different entirely. (Actually those are my words, not the Court's - kind of tells you where I fall on the PHOSITA continuum, doesn't it?)

The Court concluded that the claim was not indefinite, noting that he could not find, nor could the defendants, any authority for the proposition that words of permission in a claim render it automatically indefinite. In other words, he decided that a PHOSITA could, in fact, figure it out.

Lt. General Frederick "Boy" Browning: I've just been on to Monty. He's very proud and pleased.Major General Urquhart: Pleased?Lt. General Frederick "Boy" Browning: Of course. He thinks Market Garden was 90% successful.Major General Urquhart: But what do you think?Lt. General Frederick "Boy" Browning: Well, as you know, I always felt we tried to go a bridge too far.

This case was tried before a jury January 9, 2009 through January 29, 2009, resulting in a verdict in favor of Defendant B-Tek Scales, LLC on infringement of all three of the asserted patents, and and for the defendant on invalidity as to two of the three patents.

Following the jury trial in this case, the defendant, inspired no doubt by Gen. Montgomery's campaign to take the bridges across the Rhine in Operation Market Garden (from which came the Cornelius Ryan book from which we derive the colloqial term A Bridge Too Far) launched Operation Inequitable Conduct Garden (at least that's what I think they called it), seeking a judicial finding that the patents that it didn't infringe and which were invalid anyway (two of the three) were also unenforceable due to inequitable conduct.

Judge Giblin accordingly conducted a bench trial on the issue of inequitable conduct, after which he concluded that the defendants had failed to establish by clear and convincing evidence an intent to deceive sufficient for a finding of inequitable conduct. "While [defendant] need not point to a 'smoking gun' to prevail, because inequitable conduct may be inferred from circumstantial evidence," the Court wrote, "the inference must 'be the single most reasonable inference able to be drawn from the evidence.'" In this case, Judge Giblin found the prosecuting attorney credible as a witness, and that the evidence presented was open to more than one interpretation."

Defendant received a summary judgment of noninfringement following Judge Clark's Markman ruling, and now sought to have the case declared "exceptional" under 35 USC section 285 and fees of $300,738.94 for its defense of the action awarded, plus costs. Judge Clark granted the motion, finding that following the Markman ruling the plaintiff's literal infringement claims (no doctrine of equivalents claims were asserted) were objectively baseless and pursued in subjective bad faith. He therefore awarded fees and expenses, but only from that point forward ($63,533.50 in fees and $4,103.79 in costs).

Of interest to those with a thing for procedural issues is the Court's explanation of the difference between exceptional status and a Rule 11 basis for a fee award, as well as its discussion of what costs were and were not recoverable, with some being under 28 USC 1920, and some under 35 USC 285 (an important additional source for costs that are not recoverable under 1920). Kudos to the defendant for a particularly well-documented submission on copy costs, by the way - anybody can win a patent case but rarely can a law firm adequately support a request for copy costs. Judge Clark wrote that "[defendant] submitted a detailed list to the court of the costs of individual copies, what documents each charge corresponds to, and the appropriate invoices. All relate to documents copied and produced to [plaintiff], courtesy copies provided to the court, and color photographs used in [defendant's] claim construction and summary judgment filings." The court awarded costs under Section 285 for photocopies, postage, Westlaw research, and PACER research. "The court finds that these costs, all of which are for research and office expenses, are reasonably included in 'those sums that the prevailing party incurs in the preparation for and performance of legal services related to the suit.'"

An eagle-eyed reader asked yesterday what effect Judge Clark's May 19 ruling finding the patent invalid in Finisar v. DirecTV, No. 1:05cv264 had on my recent statement that the last 2 1/2 years the results at trial in patent cases in the Eastern District are 17-17. The short answer is none, as the Finisar trial was before the period I was referring to, so I wasn't counting it as a plaintiff's win because they won at trial or as a defense win because the Federal Circuit set aside the verdict and remanded. Finisar was, incidentally, the last in the string of consecutive plaintiff's verdicts that ended in the fall of 2006. But a little more background is in order.In the summer of 2006, a Beaumont jury returned a verdict of $78.9 million for Finisar in Judge Ron Clark's court, following the court's pretrial ruling that while seven of the asserted claims were invalid as indefinite, seven were not. Whether this was a plaintiff or defense win depends on who you believe - the plaintiffs claimed a win because they won about four times what the defense said the proper measure of damages was, assuming infringement and invaldity (which were contested) while the defendants told me that they won because the damages were about three percent of what the plaintiff had sought at trial.The case went up on appeal and the Federal Circuit reversed in part, remanding for reconsideration due to a change it made in the court's claims construction (they do that, you know). See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1341 (Fed. Cir. 2008). On remand, Judge Clark invited briefing on the invalidity issues under the new construction, and on Tuesday of this week granted the motion for summary judgment that the remaining asserted claims were either anticipated or obvious.